Asia Patent Alliance

Parameter inventions - requirements for claims and description 2

This article further explains requirements for claims and specifications of parameter inventions. As in the previous article we will explain examples from the Japanese examination standard and a corresponding example for an office action.

[Claim1]
A stretched packaging film made of resin that contains biodegradable polymer, which satisfies Formula (1) Formula (1): 1.61na–1.78≧NS≧1.61na–2.43, wherein NS refers to the plane orientation coefficient and na refers to the average refraction index.

[Claim2]
A stretched packaging film described in Claim 1, consisting of 20 to 40 weight percent of polylactic resin and 60 to 80 weight percent of resin X, which is stretched to 2.5 to 3.5 times its length and 1.5 to 2.5 times its width.

Outline of the reasons for refusal

The detailed explanation of the invention states that if a stretched packaging film which is made of resin satisfies Formula (1) it is highly stretchable and easy to open. However, there is no ground for proving that any film, including a film of which the resin composition and stretch ratio are significantly different from those mentioned above, can solve the problem if only it satisfies Formula (1). Thus, the invention of Claim 1 exceeds the scope stated in the detailed explanation of the invention. Furthermore, in the detailed explanation of the invention, in light of the common general knowledge as of the filing, the relationship between the problem to be solved by the invention and the formula of claim 1 is not explained in a way that it can be understood substantially, so the technical significance of the invention of Claim 1 is unclear.

In this case the invention would be granted a patent if claim 1 was deleted. A claim like this that does not include all the requirements necessary to express the effect of the invention does not fulfill the support requirements. Also, if there are only a few practical examples that fulfill formula 1, the technical significance of the formula will be judged as unclear. In this case it is possible to fulfill the requirements for claims and specifications by providing sufficient practical examples under different conditions, among those practical examples that do fulfill the formula and examples that do not fulfill, it as well as an explanation of the technical significance of the formula